Re: [gnso-iocrc-dt] Summing up Option 7

[Alan Greenberg <greenberg.alan@xxxxxxxxx>]

I think it quite reasonable, in the context of this discussion, that 
an exact match cannot be appealed.  Alan
At 17/02/2012 05:22 PM, Jim Bikoff wrote:
> Jeff,
>
> This note, like yours, is made not as an IPC member, but rather in 
> my individual capacity.
> This note includes the Olympic and Red Cross terms, although we 
> understand that the IRC will submit its own comments on the options.
> The first parts of Option 7 look appropriate as you have summarized 
> them, i.e.:
> "Option 7:  Treat the terms set forth in Section 2.2.1.2.3 as 
> "modified reserved names" meaning:
>     a)      The names are available as gTLD strings to the 
> International Olympic Committee, International Red Cross and Red 
> Crescent Movement, as applicable.
>     b)      Applied-for gTLD strings are reviewed during the String 
> Similarity review to determine whether they are similar to those in 
> Section 2.2.1.2.3. An application for a gTLD
>              string that is identified as too similar to a Reserved 
> Name will not pass this initial review."
> In section c), the core issue is, if an application fails to pass 
> initial string similarity review, what standard should be used  for 
> an applicant to try to overcome the adverse review?  I suggest:
>         (1) If the applied-for TLD matches any of the terms in 
> 2.2.1.2.3 (e.g., ".Olympic" or ".RedCross"), it cannot be 
> registered by anyone other than the IOC/RC.
>         (2) If the applied-for TLD is not identical to any of the 
> terms in 2.2.1.2.3, but fails initial string similarity review with 
> one of those protected terms, the applicant may attempt to:
>             (a) obtain a letter of non-objection from the IOC or 
> Red Cross; or
>             (b) claim that it has a legitimate interest in the string; and
>
>             (c) explain why it believes that the new TLD is not 
> confusingly similar to one of the protected strings and makes 
> evident that it does not refer to the IOC, the Red Cross, or any 
> Olympic or Red Cross activity.
>                 (d) A determination in favor of the applicant under 
> this provision would not preclude the IOC, the Red Cross, or other 
> interested parties from bringing a legal rights objection or 
> otherwise contesting the determination.
> {Explanation:
>
> In (b), a claim of "legitimate interest" would encompass a broad 
> range of attempted justifications (including, as you have 
> noted,"traditional knowledge and cultural heritage,"), without 
> unduly suggesting that the applicant has "rights," or that the claim 
> of legitimacy would prevail over the protected terms. A showing of 
> ordinary trademark rights would not typically suffice to overcome 
> the protections afforded the Olympic and Red Cross marks, because 
> they are afforded superior legislative protection that trumps 
> ordinary trademark rights. This was enunciated by the U.S. Supreme 
> Court in San Francisco Arts & Athletics v. United States Olympic 
> Committee and International Olympic Committee, 483 U.S. 522 
> (1987).  See also the Greek Statute Article 3 Law 2598/1998, a 
> translation of which is attached, reserving the right to use the 
> terms "Olympic" and "Olympiad" to the Olympic Committee.
> In (c), by the same token, the IOC and Red Cross are afforded a high 
> level of statutory protection against dilution of their trademarks 
> through use by unauthorized parties, even in the absence of 
> confusing similarity. See e.g., San Francisco Arts & Athletics, 
> supra. So a showing that an applied-for TLD is not confusingly 
> similar to a protected string would not, standing alone, overcome an 
> initial refusal.
> If, on the other hand,  in an exceptional case, an applicant can 
> demonstrate that it has an established legitimate interest in its 
> applied-for TLD string, and that the TLD is not confusingly similar 
> to one of the protected strings and makes evident that it does not 
> refer to the IOC, the Red Cross, or any Olympic or Red Cross 
> activity, then that might constitute an appropriate basis for an 
> appeal, to be considered on a case by case basis.
> In (d), the provisions allowing an applicant to seek recourse from 
> an adverse initial string similarity review permit the applicant to 
> express its claims fully.  These provisions should not be construed 
> to imply that an applicant's claims would  necessarily prevail over 
> the protected terms, nor should they be construed  to prejudice, 
> restrict or diminish in any way the IOC 's,  Red Cross' or other 
> interested parties' ability to enforce their legal rights and 
> contest an application.}
> Best regards,
>
> Jim
>
> James L. Bikoff
> Silverberg, Goldman & Bikoff, LLP
> 1101 30th Street, NW
> Suite 120
> Washington, DC 20007
> Tel: 202-944-3303
> Fax: 202-944-3306
> <mailto:jbikoff@xxxxxxxxx>jbikoff@xxxxxxxxx